Your government-funded research at a university lab has produced results, published in a peer-reviewed journal, that have great potential for commercial application. A for-profit corporation requests a copy of your data, saying that they want this for use in their own research, and they have no intention of commercializing your results. You strongly believe that the potential for commercial application is compelling and unavoidable. How should you proceed?

Comments

The investigator should have filed an invention disclosure with his/her institution prior to publishing the paper. The for profit corp should be interacting with the tech transfer office of the university to obtain a license on the IP. The company may say, and may actually mean it at the time (but I would never take a bet on that), that they have no intention of commercializing results. Conditions may change and the company's intentions, and actions, may change as well.

One of the reasons the Government funds research with taxpayer dollars is to generate more tax dollars (e.g. spur business use of publicly funded intellectual property development). Unless the funding was an SBIR grant (which generally invests IP with the principal investigator), the data should be shared. Getting sucessful research out of the lab and into the public's hands (business or individual) is an ethical obligation of all PIs.

The researcher isn't the only interested party here; her university also has a stake in this decision. The first step should be to confer with the appropriate office. Unless the researcher and the university agree that pursuing a patent or other intellectual property protection/exploitation is a waste of time, the data should not be shared.

The power of a medium for-profit organization to write an Intellectual property on a certain subject can be 20 patents a month. So, the data shared can just contribute to give the right direction and exclude your means to write a future IP on that subject. In other hands, if you use their data: Some for profit organization has a principle to sue any intellectual property coming from labs which there was a cooperation involved, as a matter to assure that has not misusage of their material/data or loss of profit.

I would not share any sensitive data with any organization when I would have intentions to get one IP on that.

Consult your Tech Transfer office and they should arrange licensing agreements or better yet apply for a patent on your part. In any case a contract needs to be written that guarentees you as a co-inventor and your portion of any proceeds.

Unless key features have not been disclosed in the publication, it is therfore too late for any patent protection. Most likely the key features that could have been protected, can be derived from the publication itself. Any public disclosure of data/results negates any chance of patent protection - even abstracts. That is why patent application must be filed before any public disclosure of data and results.